Opinion
Civil No. 4-95-656 (DWF/AJB)
May 14, 2003
Jonelle R. Burnham, Esq., Kimberly-Clark Worldwide, Neenah, WI; Thomas J. Leach, III, Esq., Earl D. Reiland, Esq., David K. Tellekson, Esq., and Anthony R. Zeuli, Esq., Merchant Gould, Minneapolis, MN ; and Donald S. Trevarthen, Esq., The Toro Company, Minneapolis, MN. Counsel for Plaintiff.
Lawrence J. Field, Esq., Leonard Street and Deinard, Minneapolis, MN; and John M. Griem, Jr., Esq., William McGuinness, Esq., Rita M. Odin, Esq., David E. Sipiora, Esq., Debra M. Torres, Esq., Pauline L. Wen, Esq., and David A. Zilberberg, Esq., Fried Frank Harris Shriver Jacobson, New York, NY. Counsel for Defendants.
OPINION AND ORDER
Introduction
The above-entitled matter came on for hearing before the undersigned United States District Judge on May 2, 2003, pursuant to Plaintiff's Motion for Summary Judgment of Non-Invalidity and Defendants' Motion for Summary Judgment of Non-Infringement. This litigation involves a claim by Plaintiff The Toro Company ("Toro") that Defendants White Consolidated Industries, Inc., and WCI Outdoor Products, Inc., (collectively, "WCI") have produced a hand-held blower/vacuum device that violates Toro's U.S. Patent No. 4,694,528 (the "'528 patent"). For the reasons set forth below, Plaintiff's and Defendants' motions are granted.
Background
The '528 patent describes a hand-held device that functions as both a blower and a vacuum. Although it may have other applications, the device described in the '528 patent is designed primarily to vacuum or blow lawn debris, such as leaves. Independent claim 16 and dependent claim 17, the claims allegedly infringed by WCI's product, require "a removable air inlet cover for covering . . . [the] air inlet . . . said cover including means for increasing the pressure developed by said vacuum-blower during operation as a blower . . . ." The "means for increasing the pressure" described in the patent is a "restriction ring." In The Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302 (Fed. Cir. 1999) (Toro I), the Federal Circuit concluded that the language of claim 16, and hence claim 17, requires the restriction ring be "permanently affixed to and included as part of the cover." Specifically, the Toro I court noted language in the specification of the '528 patent that described the benefit of a unitary cover/ring structure over a separate ring, that benefit being that the unitary structure automatically restricts airflow through the air inlet without requiring additional steps by the user. Because the allegedly infringing WCI product has a restriction ring that is not permanently affixed to the cover, but rather is attached by the consumer separately, the Federal Circuit held that the WCI product did not, as a matter of law, literally infringe the '528 patent. However, the Federal Circuit further held, in The Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367 (Fed. Cir. 2001) (Toro II), that the limitation read by the Toro I court was merely a structural limitation, not a functional limitation. In other words, while the claim literally reads only on a unitary cover/ring structure, the only function required by the claims is a means of increasing pressure with no limitation on whether that function is achieved automatically. Thus the Federal Circuit concluded that the district court improperly granted summary judgment that the WCI product does not infringe the '528 patent under the doctrine of equivalents because a material issue of genuine fact exists as to whether the separate ring and cover of the WCI product "performs substantially the same overall function as the cover claimed by the '528 patent." Toro II, 266 F.3d at 1372.
The issue is currently before the Court on a second motion for summary judgment of non-infringement under the doctrine of equivalents. Specifically, WCI asserts that under Johnson Johnston Assoc. Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002), the two-piece cover/ring embodiment is dedicated to the public because it was disclosed but not claimed, and, accordingly, that subject matter cannot be recaptured through application of the doctrine of equivalents.
Toro asserts that the Federal Circuit, in this litigation, has already held that the patent discloses only one embodiment and that there is a genuine issue of material fact with respect to the application of the doctrine of equivalents. Accordingly, Toro asserts that the law of the case precludes a grant of summary judgment of non-infringement.
Discussion
1. Standard of Review
Summary judgment is proper if there are no disputed issues of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c). The court must view the evidence and the inferences which may be reasonably drawn from the evidence in the light most favorable to the nonmoving party. Enterprise Bank v. Magna Bank of Missouri, 92 F.3d 743, 747 (8th Cir. 1996). However, as the Supreme Court has stated, "[s]ummary judgment procedure is properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed 'to secure the just, speedy, and inexpensive determination of every action.'" Fed.R.Civ.P. 1. Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986).
The moving party bears the burden of showing that there is no genuine issue of material fact and that it is entitled to judgment as a matter of law. Enterprise Bank, 92 F.3d at 747. The nonmoving party must demonstrate the existence of specific facts in the record which create a genuine issue for trial. Krenik v. County of Le Sueur, 47 F.3d 953, 957 (8th Cir. 1995). A party opposing a properly supported motion for summary judgment may not rest upon mere allegations or denials, but must set forth specific facts showing that there is a genuine issue for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986); Krenik, 47 F.3d at 957.
2. The Johnson Johnston Case
In March of 2002, the Federal Circuit issued an en banc, per curiam opinion in Johnson Johnston Assoc. Inc. v. R.E. Service Co., Inc., 285 F.3d 1046 (Fed. Cir. 2002). The Johnson Johnston decision overruled YBM Magnex, Inc. v. Int'l Trade Comm'n, 145 F.3d 1317 (Fed. Cir. 1998), and resolved an apparent conflict between YBM Magnex and Maxwell v. J. Baker, Inc., 86 F.3d 1098 (Fed. Cir. 1996).
The parties in the instant litigation dispute whether Johnson Johnston created new law or simply clarified the scope of Maxwell. As discussed more thoroughly below, because the Court concludes that this issue has never been addressed in this litigation, it does not matter whether Johnson Johnston is supervening authority or merely a re-articulation of authority that existed at the time of the Federal Circuit's decision in Toro II.
Johnson Johnston involved a patent for a component used in assembling printed circuit boards. Specifically, the patent described a laminate composed of a sheet of copper foil (that is a functional component of the circuit boards) adhered to a sheet of aluminum; adhering the delicate copper foil to a sturdy aluminum substrate allows for easier manipulation of the copper foil during the production process.
The specification of the patent at issue in Johnson Johnston noted that "[w]hile aluminum is currently the preferred material for the substrate, other metals, such as stainless steel or nickel alloys, may be used." The claim language, however, referenced only use of an aluminum substrate. The allegedly infringing device involved use of a stainless steel substrate. The Federal Circuit held that "when a patent drafter discloses but declines to claim subject matter . . . this action dedicates that unclaimed subject matter to the public. Application of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would 'conflict with the primacy of the claims in defining the scope of the patentee's exclusive right.'" Johnson Johnston, 285 F.3d at 1054. The Court found that the claims were limited to use of an aluminum substrate while the specification disclosed the possibility of steel substrates; accordingly, the Court concluded that the plaintiff could not invoke the doctrine of equivalents in order to recapture the use of steel substrates. The Court so held despite the fact that the steel substrate performed the exact same function as the aluminum substrate and despite the fact that the specification did not overtly disparage the use of a steel substrate relative to the use of an aluminum substrate.
3. The Case at Bar
The facts of this case are on all fours with the facts in Johnson Johnston. The specification of the '528 patent contrasts "building the flow restriction ring . . . as part of the air inlet cover . . ." with "having the operator manually insert or remove a replaceable ring." In other words, the specification of the '528 patent discloses the option of using a replaceable ring rather than a unitary cover/ring structure just as surely as the patent in Johnson Johnston disclosed the option of using a stainless steel substrate rather than an aluminum substrate. Moreover, the Federal Circuit has already held, in Toro I, that the claim language reads only on a "restriction ring . . . permanently affixed to and included as part of the cover." Toro I, 199 F.3d at 1302. In other words, just as the patent in Johnson Johnston claims only the use of an aluminum substrate, the '528 patent claims only the use of a unitary cover/ring structure. Accordingly, the Court must reach the same conclusion as did the Federal Circuit in Johnson Johnston: Toro disclosed the separate ring/cover structure in the patent specification yet failed to claim it, and therefore Toro cannot now reclaim the separate ring/cover structure through application of the doctrine of equivalents.
Toro argues that the Toro I decision squarely held that the separate ring/cover structure was not disclosed in the '528 patent, and, as a result, Johnson Johnston does not apply. The Court does not agree. In Toro I, the Federal Circuit did state:
The specifications and drawings show the restriction ring as "part of" and permanently attached to the cover. No other structure is illustrated or described. The specification describes the restriction ring as "buil[t] . . . as part of the air inlet cover," and does not suggest that the cover and the ring may be two distinct components to be inserted and removed separately. To the contrary, the specification describes the advantages of the unitary structure as important to the invention.
Toro I, 199 F.3d at 1301. However, when one reads this passage in context, it is clear that the Federal Circuit meant only that the patent teaches the unitary ring/cover structure as part of the claimed invention and does not teach the separate ring/cover structure as an acceptable alternative. Indeed, as the Federal Circuit noted, "the specification describes the advantages of the unitary structure as important to the invention," id., and it does so by contrasting the unitary structure with a "replaceable ring," an alternative that is not acceptable.
In short, there is no doubt that the specification of the '528 patent discloses the separate cover/ring structure employed by WCI in the allegedly infringing device. It does so by noting the inferiority of a device in which "the operator manually insert[s] or remove[s] a replaceable ring." Thus, while it does not teach such a device or disclose it in a favorable light, the patent certainly discloses the separate ring/cover structure to the same extent that the patent in Johnson Johnston disclosed a stainless steel substrate. The troublesome language in Toro I, when taken in context, does not undermine this conclusion, but rather bolsters it; the Toro I court clearly relied upon the disparaging remarks about the separate ring/cover structure contained in the patent specification to reach the conclusion that the claim language intended only to reach a unitary structure.
Toro further argues that the law of the case should preclude a grant of summary judgment on this matter. The Toro II court held that a genuine issue of material fact exists as to whether the separate ring/cover structure and the unitary ring/cover structure are equivalent. Toro asserts that the Toro II court must have concluded, by "necessary implication," that the separate ring/cover structure was not dedicated to the public. The Court does not agree. As the Fifth Circuit has explained:
The [law of the case] doctrine's reach does have its limits . . . [T]he doctrine applies only to issues that were actually decided, rather than all questions in the case that might have been decided, but were not. But, the issues need not have been explicitly decided; the doctrine also applies to those issues decided by "necessary implication." In other words, even when issues have not been expressly addressed in a prior decision, if those maters were "fully briefed to the appellate court and . . . necessary predicates to the [court's] ability to address the issue or issues specifically discussed, [those issues] are deemed to have been decided tacitly or implicitly, and their disposition is law of the case.
Alpha/Omega Ins. Services, Inc. v. Prudential Ins. Co. of America, 272 F.3d 276, 279 (5th Cir. 2001) (citations omitted). Here, the issue of dedication to the public was not fully briefed; WCI referenced the Maxwell case in one paragraph of it's Toro II brief, but Toro did not respond to that argument and WCI mentioned it only in passing. Moreover, the issue of dedication to the public was not a necessary predicate to the issue of whether there was a factual issue regarding equivalence. It is true that if a potentially equivalent structure was dedicated to the public, the issue of equivalence becomes irrelevant, but that does not make one issue a necessary predicate of the other.
The Court cannot construe the Federal Circuit's silence on the issue of public dedication as an implicit holding in favor of Toro, particularly when the issue was in flux at the time of the Toro II decision and has now been squarely resolved. Accordingly, the Court finds that the law of the case does not preclude a finding of dedication to the public. Moreover, the patent, read in light of the Toro I decision and the Johnson Johnston decision, clearly describes the separate ring/cover structure yet does not claim it, thus dedicating that structure to the public. Summary judgment of non-infringement under the doctrine of equivalents is appropriate. The Court recognizes that the procedural history of this litigation is not a model of efficiency, and the Court realizes that this latest "twist" must surely frustrate the parties. Cases should eventually end, and this one doesn't seem to want to. Nevertheless, the Court cannot ignore the clear legal direction of Johnson Johnston and the straightforward facts of this case simply because it has taken eight years and two appeals to reach this particular fork in the road.
4. WCI's Invalidity Defense
WCI has asserted a defense that claims 16 and 17 of the '528 patent are invalid. Claims 16 and 17 both reference a "means for increasing pressure"; WCI contends that this limitation refers to both the ring discussed above and adjustable apertures that restrict the flow of air. If WCI is correct in its interpretation of the patent, WCI asserts that its product does not infringe because its product does not possess such adjustable apertures. If, however, the "means for increasing the pressure" referenced in those claims does not include the adjustable apertures, WCI asserts that those claims are invalid for indefiniteness.
The scope of the "means for increasing pressure" limitation has already been adjudicated. In the context of a Markman hearing, the District Court held that the "means for increasing the pressure" referred to a ring positioned over the impeller. The District Court's decision was appealed to the Federal Circuit, which affirmed the District Court's decision on that particular issue. Here, the issue of necessary implication is relevant. For the Federal Circuit to conclude that the "means for increasing the pressure" referred only to a ring positioned over the impeller, the Federal Circuit must necessarily have concluded that the meaning of the claim language was sufficiently clear as to be amenable to interpretation. Accordingly, the Court cannot find by clear and convincing evidence that claims 16 and 17 of the '528 patent are invalid for indefiniteness. Summary judgment of non-invalidity is appropriate.
For the reasons stated, IT IS HEREBY ORDERED:
1. Plaintiff's Motion for Summary Judgment of Non-Invalidity (Doc. Nos. 275 and 282) is GRANTED; and
2. Defendants' Motion for Summary Judgment of Non-Infringement (Doc. No. 276) is GRANTED, and the COMPLAINT is DISMISSED WITH PREJUDICE.
LET JUDGMENT BE ENTERED ACCORDINGLY.